Important provisions of the America Invents Act ("AIA"), the most significant patent reform legislation in decades, will be implemented by the United States Patent and Trademark Office ("USPTO") over the next six months. These changes to patent law begin coming into effect on September 16, 2012, and will culminate in the controversial change of the U.S. patent system from a "first to invent" system to a "first inventor to file" system, which will become effective March 16, 2013. Below is an overview of the changes under the AIA. Many of the specific changes will be further discussed in future Alerts.

Changes Effective September 16, 2012

Third Parties Allowed To Submit Patents, Published Applications, and other Published Documents for Consideration

The Act allows any party, even anonymously through a registered practitioner, to submit any relevant publications in another's application for consideration by the patent examiner. These submissions must be made within a strict time frame, generally before any substantive examination has occurred. Accordingly, one may wish to monitor patent publications on a regular basis and, if possible, submit any prior art for the Examiner's consideration in a competitor's application to ensure that all relevant publications are considered during examination.

A Second Swipe At Business Method Patents

A transitional post-grant review proceeding has been created specifically to consider the validity of certain business-method patents. It applies to any "patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions." Some software-related patents may also be exposed to this business method post-grant review.

"Applicant" now can be the Assignee, not the Inventor

Under current practice, the inventors of a patent application are considered the "applicants", even where the application is filed at the direction of the assignee of the application (typically the inventors' employer). Under the new rules, the assignee can apply for the patent as the "applicant."

There are several options for post-grant review of issued patents. A "post-grant review" can be requested within nine months of the issuance of the patent, and the grounds for seeking such review can be any grounds of invalidity, with the exception of the requirement to disclose the best mode in the application. After nine months, a party can request an "inter partes review," which replaces the current inter partes reexamination. Inter partes review of an issued patent is limited to challenges for novelty and non-obviousness, where there is a reasonable likelihood that the petitioner will prevail on at least one claim. The new USPTO fees for an inter partes review are about three times more than the fees for an inter partes reexamination. In addition, where a related civil action involving the party and the patent is already pending, the Act prohibits the party from filing a post-grant review or inter partes review.

Patent Owner's Right To Supplemental Examination

Supplemental examinations have been established for a patent owner "to consider, reconsider, and correct information believed to be relevant to the patent." This new process allows patent owners the right to submit prior art to the USPTO without requesting reissue of the patent or putting the patent through the traditional reexamination procedure. Supplemental examination under this section of the Act is not available, however, if an allegation of invalidity over the subject art has already been made in a legal proceeding.

Changes to Patent Trial and Appeal Board

The Board of Patent Appeals and Interferences (BPAI) has been renamed the Patent Trial and Appeal Board (PTAB). Among other rule changes to appeal practice, the applicant may now appeal to the Court of Appeals for the Federal Circuit (CAFC) from certain Board decisions.

Changes Effective March 16, 2013

First To File, Not First To Invent

Perhaps the most significant change in the Act is that all patents filed after March 16, 2013, will be subject to new first-to-file and prior art rules, effectively ending the long-held first-to-invent rules in the United States and creating a "race to the Patent Office." Potentially impacted patent applications should be filed before the changes take effect; after they been implemented, there are a number of other strategic considerations. The current "on sale" bar, prohibiting sale or disclosure of the claimed invention more than one year before filing, is eliminated. The Act, however, establishes a limited one-year grace period if the inventor, or a licensee or assignee of the invention, made certain disclosures of the claimed invention. The novelty and non-obviousness sections (Sections 102 and 103) of the patent law are amended, and existing provisions relating to inventions made abroad and statutory invention registration are eliminated. These changes affect what is considered prior art for an application.

Derivation Hearing Replaces Interference Proceeding

The Act permits a patent owner to bring a Derivation Hearing at the USPTO against another patent owner claiming to have the same invention and who has an earlier effective filing date. The Derivation Hearing replaces the notoriously arcane and complex interference proceeding. A filing for a Derivation Hearing must be done within a one-year period, beginning on the date of the first publication of a claim in the earlier-filed application. Alternatively, the owner of a patent may sue the owner of another patent that claims the same invention and has an earlier effective filing date. Significantly, these lawsuits can only be brought if the invention claiming priority was derived directly from the person seeking relief.

For more information on these changes, please contact your Intellectual Property attorney at Winthrop & Weinstine.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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